Does Slovenian trademark give protection abroad? Registering a trademark with the Slovenian Intellectual Property Office protects your rights in Slovenia only. But the filing date of a Slovenian national application can be used as a priority date for the application when applying up to six months later for protection abroad. It can also be used as the basis of an application for an international registration under conditions set up by Madrid Agreement or Madrid Protocol.
Disclaimer This leaflet provides only an introduction to registration of trademarks. It carries no authority and is not provided to give legal advices or opinion about registered trademarks.
Further information: Slovenian Intellectual Property Office Kotnikova 6, SI-1000 Ljubljana, Slovenia Phone: +386 1 478 3154 Fax: +386 1 300 62 90 E-mail: info@uil-sipo.si Website: http://www.uil-sipo.si
TRADEMARKS
IN SLOVENIA
b a s i c f a c t s
What is a trademark? According to the Slovenian Industrial Property Act, it is any sign, or ages, including the shape of goods or of their packaging, combination of colours as well as any combination of such signs. What rights does a registered trademark confer? The exclusive right to use the trademark to identify goods or services and the right to prevent third parties not having the owner’s consent from using it in the course of trade. How to register a trademark in Slovenia? The first step is to file a national trademark application with the Slovenian Intellectual Property Office. It may be filed in a foreign language, provided that it includes at least the indication of the right requested, and the indication allowing the applicant to be contacted by the Office, in the Slovenian, English, French or German language. The Office then invites the applicant to submit, within three months, the translation of the application in the Slovenian language. The application is first examined as to formal requirements, which is followed by an examination for absolute grounds for refusal. If the latter exist, the Office gives the applicant an opportunity to make observations. If the trademark is accepted for registration, the application is published in the Official Journal to allow the owner of an earlier trademark to oppose, within three months, the registration. If no opposition is filed or it has been refused, the trademark is registered. Are all trademarks registrable? No. According to Article 43 of the Act, a trademark can not be registered if it is devoid of any distinctive character, merely descriptive, exclusively the shape of goods or their packaging, misleading, customary in the current language, contrary to public order or morality, official symbol covered by Article 6ter of the Paris Convention, or if it contains or consists of a geographical indication for wines or spirits, where the trademark relates to wines or spirits not having this origin.
What do you need to consider before filing an application? Always check to see if the same or a similar trademark has already been applied for or registered in respect of Slovenia. The Office does not perform an ex officio examination as to earlier rights (relative grounds for refusal) but its Information Department can search on your behalf for identical and similar trademarks. The relevant data can be obtained from the Database Server on the Office’s website. Can I act alone before the Office? Foreign natural and legal persons having neither residence nor real and effective industrial or commercial establishment in Slovenia shall have a representative whose name has been entered in the register of agents. However, foreign applicants may file applications, perform acts relating to the establishment of the filing date, pay fees, file copies of first applications when claiming the right of priority and receive notifications by the Office relating to those proceedings, without a representative, provided that they communicate to the Office an address for correspondence which is in the territory of Slovenia. A list of authorised agents can be obtained from the Office or the Office’s website.
What are the costs of the national procedure? Slovenian Intellectual Property Office charges the application fee in the amount of 100 € which covers three classes. The registration fee is 150 €. A current list of fees can be obtained from the Office or the Office’s website. How long does registration last? The registration is valid for 10 years, and can be renewed every subsequent 10 years upon payment of the 150 € of renewal fee. Is there an alternative to the regular national application? An application for the registration of a trademark in Slovenia can also be filed under Madrid Agreement and Madrid Protocol which Slovenia is party to. International applications are subject to the same substantive procedure examination (absolute grounds for refusal and the possibility of filing the opposition) as if they had been filed nationally.
A trademark for Slovenia can also be protected via OHIM as a community trademark (CTM) valid throughout the Community.
Can a trademark be removed from the register? Yes. Actions to remove trademarks from the register may be filed with the court on the ground of bad faith, liability to mislead the public, on relative grounds or on the ground that the trademark has become the common name in the trade. Actions for cancellation of a trademark on account of non-use as well as actions for declaration of nullity may also be filed with the court.
A trademark for Slovenia can also be protected via OHIM as a community trademark (CTM) valid throughout the Community.